The Deputy Commissioner for Patent Examination Policy, Mr. John J. Love, has issued a memorandum to the USPTO Technology Center Directors in an effort to clarify processes under 35 USC § 101. In the memorandum, dated May 15, 2008, Mr. Love provided a two-step process for determining patent eligibility of process claims under 35 USC § 101.
The first step in determining patent eligibility of a process claim involves checking whether the process claim (i) positively recites another statutory class (i.e., machine, manufacture, or composition of matter, or more colloquially, thing or product or apparatus) or (ii) transforms underlying subject matter to a different state or thing. If either (i) or (ii) is true, then the process claim qualifies as a statutory process and the examiner can proceed to the second step.
The second step involves determining whether the process claim falls within a judicial exception, i.e., law of nature, natural phenomenon, or abstract idea, and, if so, whether the process claim is directed to a practical application of a judicial exception. If the process does not fall within a judicial exception or if the process claim is directed to a practical application of a judicial exception, then the process claim is patent eligible under 35 USC § 101. According to MPEP 2106.IV.C, determining whether a claimed invention is directed to a practical application of a judicial exception involves determining (a) whether the claimed invention transforms an article or physical object to a different state or thing or (b) whether the claimed invention produces a useful, concrete, and tangible result.
There is an overlap between the first and second steps, i.e., option (ii) of the first step is the same as option (a) of the second step. While the first step is clear, the second step is ill-defined. The MPEP is vague about how to determine if a claimed invention produces a useful, concrete, and tangible result, leaving the applicant at the mercy of the examiner. Consider a scenario where an examiner states that for a result to be tangible it has to be outputted to a user, displayed to a user, stored for later use, or used in any tangible manner. Is it reasonable then to say that if a result is not used in any tangible manner, the result is intangible? Or is the proper test that the result is tangible if it can be used in any tangible manner?
The Court continues to be dodgy in defining unambiguously the term "process" under 35 USC § 101. With such a murky state of affairs, perhaps a moratorium on determining patent eligibility of process claims under 35 USC § 101 would be more appropriate.